In its recent decision in 2718971 Ontario Inc. v Kinde Company Ltd., the Trademarks Opposition Board (the "TMOB") dealt with an unusual set of facts that arose largely because of the lengthy delays in the trademark application process in Canada. Nearly two years after the applicant had filed an application to register KINDE COMPANY on a proposed use basis, but before it began using the trademark and before its application was advertised for opposition, the opponent began using the trademark, KIND, with similar goods and services. The opponent opposed the application on the basis that, by the time the application was finally advertised for opposition, the opponent had used KIND to such an extent that it had rendered KINDE COMPANY non-distinctive. The applicant, represented by Shift Law, persuaded the TMOB to reject the opposition.
Imagine coming up with a brilliant brand name for your product and then filing an application to register it as a trademark the next day. Now imagine that a year later, before you've launched the brand, and while your application is still being reviewed in the Trademarks Office, someone launches a competing product with your brilliant brand name. Then, to add insult to injury, they oppose your pending application on the basis that their trademark has made yours non-distinctive. As unfair as this may seem, the opposition to your application might succeed. That is because, in opposition proceedings before the TMOB, the relevant date for assessing the distinctiveness of a trademark is not when the application to register it was filed but, rather, when the opponent files its statement of opposition. In the old days, this might only be a five-month gap – not much time for someone other than the applicant to launch a similar trademark and then saturate the marketplace with it. But, in recent years, when trademark applications are taking 36 months or more to be reviewed, an interloper like the opponent in the scenario described above, will have plenty of time to swoop in and deprive the applicant of an opportunity to register its trademark.
Fortunately for the applicant in the KINDE COMPANY case, the opponent's use of KIND with magazines in the intervening years between the filing of the application and the statement of opposition (i.e. between May 8, 2018 and March 9, 2021), was found not to be sufficient to render KINDE COMPANY incapable of distinguishing the applicant as a source of magazines. What the opponent had to prove was that its KIND trademark: i) was known to some extent in Canada in association with magazines; and ii) had a reputation in Canada that was "substantial, significant or sufficient" so as to negate the distinctiveness of KINDE COMPANY as of the relevant date. The TMOB found that evidence that the opponent had distributed thousands of copies of KIND magazine since 2020 established that its KIND mark had become "known to some extent" by March 2021. However, the TMOB found that there was no evidence to establish that the reputation of KIND was "substantial, significant or sufficient" so as to negate the inherent distinctiveness of KINDE COMPANY.
While the opposition was ultimately rejected, an important takeaway from the KINDE COMPANY case is that an applicant ought to begin using its trademark as soon as possible, i.e. before someone else can establish a reputation with a similar trademark sufficient to render the applicant's trademark non-distinctive. A takeaway from the case for opponents is that the bar for establishing non-distinctiveness in these circumstances is a high one. Evidence will be needed to show that the opponent's intervening use of a similar trademark not only affected the distinctiveness of the applicant's trademark as of the relevant date but that it effectively negated any distinctiveness in the applicant's trademark.
Shift Law has extensive expertise and experience in trademark opposition and litigation matters. Let us know if you're in a trademark dispute and need help.
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